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Novo Nordisk A/S v. Caraco Pharma. Labs., Ltd.

Novo Nordisk A/S and Novo Nordisk Inc. (“Novo”) appeal a decision of the United States District Court for the Eastern District of Michigan which held that claim 4 of U.S. Patent No. 6,677,358 (“’358 patent”) was invalid as obvious and that the ’358 patent was unenforceable due to inequitable conduct. See Novo Nordisk A/S v. Caraco Pharm. Labs., 775 F. Supp. 2d 985, 1025 (E.D. Mich. 2011). For the reasons set forth below, we affirm in part and reverse in part.

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Gary Friedrich Enters., LLC v. Marvel Characters, Inc.

In 1972, the Marvel Comics Group published a comic book featuring the "Ghost Rider" -- a motorcycle-riding superhero with supernatural powers and a flaming skull for a head. The issue -- which sold for twenty cents -- told the story of Johnny Blaze, a motorcycle stunt rider who promised his soul to the devil to save his adoptive father from cancer. In this case, plaintiff-counter-defendantappellant Gary Friedrich contends that he conceived the Ghost Rider, the related characters, and the origin story, and that he owns the renewal term copyrights in those works. While acknowledging that Friedrich contributed his ideas, defendant-counter-claimant-appellee Marvel Characters, Inc. ("Marvel") contends that the Ghost Rider characters and story were created through a collaborative process with Marvel personnel and resources, and that Marvel owns the renewal rights in question. The district court granted summary judgment in favor of Marvel on the ownership issue, holding that Friedrich had assigned any rights he had in the renewal term copyrights to Marvel when he executed a form work-forhire agreement in 1978, six years after the initial publication of the issue in question. Friedrich and his production company, Gary Friedrich Enterprises, LLC, appeal. We vacate and remand for trial.

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CGS Indus., Inc. v. Charter Oak Fire Ins. Co.

This case requires us to revisit the world of “advertising injury” insurance coverage. Defendant-appellant Charter Oak Fire Insurance Company (“Charter”) appeals from a judgment of the United States District Court for the Eastern District of New York (Jack B. Weinstein, Judge), holding it liable to plaintiff-appellee CGS Industries, Inc. (“CGS”) for its expenses in defending and settling a trademark infringement suit. CGS Indus., Inc. v. Charter Oak Fire Ins. Co., 777 F. Supp. 2d 454 (E.D.N.Y. 2011). We conclude that the relevant insurance policy did not cover the liability alleged in the trademark action, and that Charter is therefore not liable for the settlement amount. We also conclude, however, that at the time CGS asked Charter to defend the trademark lawsuit, there was sufficient legal uncertainty about the coverage issue to oblige Charter to defend the action. We therefore affirm the district court’s ruling insofar as it holds Charter liable for defense costs, but reverse insofar as it holds Charter liable for the settlement. We accordingly vacate the judgment of the district court and remand for further proceedings consistent with this opinion.

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InterDigital Commc'ns, LLC v. Int'l Trade Comm'n

InterDigital Communications, Inc. (formerly InterDigital Communications, LLC), InterDigital Technology Corporation, and IPR Licensing, Inc. (collectively “InterDigital”) appeal from an order of the U.S. International Trade Commission (“ITC” or “Commission”) terminating an investigation with respect to LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively “LG”). The ITC terminated the investigation in favor of arbitration on the basis of a prior patent license agreement between InterDigital and LG that permits the parties to submit to arbitration any disputes arising under the agreement. We hold that the ITC erred in terminating the investigation because there is no plausible argument that the parties’ dispute in this case arose under their patent license agreement. We therefore reverse the ITC’s order terminating the investigation as to LG and remand to the ITC for further proceedings.

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Robert Bosch, LLC v. Pylon Mfg. Corp.

We sua sponte took this case en banc to answer two questions. First, does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this court to entertain appeals from patent infringement liability determinations when a trial on damages has not yet occurred? Second, does 28 U.S.C. § 1292(c)(2) confer jurisdiction on this court to entertain appeals from patent infringement liability determinations when willfulness issues are outstanding and remain undecided? We answer both questions in the affirmative and return the case to the panel for disposition on the merits.

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Association for Molecular Pathology v. Myriad

Each human gene is encoded as deoxyribonucleic acid (DNA), which takes the shape of a “double helix.” Each “cross-bar” in that helix consists of two chemically joined nucleotides. Sequences of DNA nucleotides contain the information necessary to create strings of amino acids used to build proteins in the body. The nucleotides that code for amino acids are “exons,” and those that do not are “introns.” Scientists can extract DNA from cells to isolate specific segments for study. They can also synthetically create exons-only strands of nucleotides known as composite DNA (cDNA). cDNA contains only the exons that occur in DNA, omitting the intervening introns.

Respondent Myriad Genetics, Inc. (Myriad), obtained several patents after discovering the precise location and sequence of the BRCA1 and BRCA2 genes, mutations of which can dramatically increase the risk of breast and ovarian cancer. This knowledge allowed Myriad to determine the genes’ typical nucleotide sequence, which, in turn, enabled it to develop medical tests useful for detecting mutations in these genes in a particular patient to assess the patient’s cancer risk. If valid, Myriad’s patents would give it the exclusiveright to isolate an individual’s BRCA1 and BRCA2 genes, and would give Myriad the exclusive right to synthetically create BRCA cDNA.Petitioners filed suit, seeking a declaration that Myriad’s patents areinvalid under 35 U. S. C. §101. As relevant here, the District Court granted summary judgment to petitioners, concluding that Myriad’s claims were invalid because they covered products of nature. The Federal Circuit initially reversed, but on remand in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U. S. ___, the Circuit found both isolated DNA and cDNA patent eligible.

Held: A naturally occurring DNA segment is a product of nature andnot patent eligible merely because it has been isolated, but cDNA ispatent eligible because it is not naturally occurring. Pp. 10–18.

(a) The Patent Act permits patents to be issued to “[w]hoever invents or discovers any new and useful . . . composition of matter,” §101, but “laws of nature, natural phenomena, and abstract ideas”“ ‘are basic tools of scientific and technological work’ ” that lie beyondthe domain of patent protection, Mayo, supra, at ___. The rule against patents on naturally occurring things has limits, however. Patent protection strikes a delicate balance between creating “incentives that lead to creation, invention, and discovery” and “imped[ing]the flow of information that might permit, indeed spur, invention.” Id., at ___. This standard is used to determine whether Myriad’s patents claim a “new and useful . . . composition of matter,” §101, orclaim naturally occurring phenomena. Pp. 10–11.

(b) Myriad’s DNA claim falls within the law of nature exception.Myriad’s principal contribution was uncovering the precise locationand genetic sequence of the BRCA1 and BRCA2 genes. Diamond v. Chakrabarty, 447 U. S. 303, is central to the patent-eligibility inquirywhether such action was new “with markedly different characteristics from any found in nature,” id., at 310. Myriad did not create oralter either the genetic information encoded in the BCRA1 andBCRA2 genes or the genetic structure of the DNA. It found an important and useful gene, but groundbreaking, innovative, or evenbrilliant discovery does not by itself satisfy the §101 inquiry. See Funk Brothers Seed Co. v. Kalo Inoculant Co., 333 U. S. 127. Findingthe location of the BRCA1 and BRCA2 genes does not render thegenes patent eligible “new . . . composition[s] of matter,” §101. Myriad’s patent descriptions highlight the problem with its claims: They detail the extensive process of discovery, but extensive effort alone isinsufficient to satisfy §101’s demands. Myriad’s claims are not saved by the fact that isolating DNA from the human genome severs the chemical bonds that bind gene molecules together. The claims are not expressed in terms of chemical composition, nor do they rely on the chemical changes resulting from the isolation of a particular DNA section. Instead, they focus on the genetic information encoded in the BRCA1 and BRCA2 genes. Finally, Myriad argues that the Patent and Trademark Office’s past practice of awarding gene patents is entitled to deference, citing J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U. S. 124, a case where Congress had endorsed a PTOpractice in subsequent legislation. There has been no such endorsement here, and the United States argued in the Federal Circuit and in this Court that isolated DNA was not patent eligible under §101. Pp. 12–16.

(c) cDNA is not a “product of nature,” so it is patent eligible under §101. cDNA does not present the same obstacles to patentability as naturally occurring, isolated DNA segments. Its creation results in an exons-only molecule, which is not naturally occurring. Its order of the exons may be dictated by nature, but the lab technician unquestionably creates something new when introns are removed from a DNA sequence to make cDNA. Pp. 16–17.

(d) This case, it is important to note, does not involve methodclaims, patents on new applications of knowledge about the BRCA1 and BRCA2 genes, or the patentability of DNA in which the order of the naturally occurring nucleotides has been altered. Pp. 17–18. 689 F. 3d 1303, affirmed in part and reversed in part.

THOMAS, J., delivered the opinion of the Court, in which ROBERTS, C. J., and KENNEDY, GINSBURG, BREYER, ALITO, SOTOMAYOR, and KAGAN, JJ., joined, and in which SCALIA, J., joined in part. SCALIA, J., filed an opinion concurring in part and concurring in the judgment.

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Organic Seed Growers and Trade Ass'n v. Monsanto Company

Appellants, a coalition of farmers, seed sellers, and agricultural organizations, sought declaratory judgments of non-infringement and invalidity with respect to twentythree patents owned by Monsanto Co. and Monsanto Technology, LLC (collectively, “Monsanto”). The district court concluded that there was no justiciable case or controversy and dismissed for lack of jurisdiction. Because Monsanto has made binding assurances that it will not “take legal action against growers whose crops might inadvertently contain traces of Monsanto biotech genes (because, for example, some transgenic seed or pollen blew onto the grower’s land),” Defs.’ Mem. of Law in Supp. of Mot. to Dismiss at 5, Organic Seed Growers & Trade Ass’n v. Monsanto Co., 851 F. Supp. 2d 544 (S.D.N.Y. 2012) (No. 11-CV-2163), ECF No. 20, and appellants have not alleged any circumstances placing them beyond the scope of those assurances, we agree that there is no justiciable case or controversy. We affirm.

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InterDigital Commc'ns, LLC v. Int'l Trade Comm'n

InterDigital Communications, Inc. (formerly InterDigital Communications, LLC), InterDigital Technology Corporation, and IPR Licensing, Inc. (collectively “Inter- Digital”) appeal from an order of the U.S. International Trade Commission (“ITC” or “Commission”) terminating an investigation with respect to LG Electronics, Inc., LG Electronics USA, Inc., and LG Electronics Mobilecomm USA, Inc. (collectively “LG”). The ITC terminated the investigation in favor of arbitration on the basis of a prior patent license agreement between InterDigital and LG that permits the parties to submit to arbitration any disputes arising under the agreement. We hold that the ITC erred in terminating the investigation because there is no plausible argument that the parties’ dispute in this case arose under their patent license agreement. We therefore reverse the ITC’s order terminating the investigation as to LG and remand to the ITC for further proceedings.

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Regents of the U of MN v. AGA Med.Corp.

Appellant Regents of the University of Minnesota (“the University”) owns U.S. Patent No. 6,077,281 (“the ’281 patent”) and U.S. Patent No. 6,077,291 (“the ’291 patent”), which are directed to medical devices for repairing heart defects. The University accused AGA Medical Corporation (“AGA”) of infringing both patents. After claim construction, the district court granted summary judgment that the ’291 patent was not infringed and that the asserted claims of the ’281 patent were invalid as anticipated. The University appeals, arguing that the district court erred in its construction of the claims of the ’291 patent, and in finding the ’281 patent anticipated by a prior art device. We affirm.

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